CHANGES FOR PATENT APPLICATION FILINGS UNDER THE AMERICA INVENTS ACT

The AMERICA INVENTS ACT Changes Patent Application Filings

Time of Filing For a Patent On An Invention or Idea Has Become More of Essence

Congress has passed the America Invents Act. There have been significant changes made in patent application practice for all inventors, including small entity inventors. Much of the Act will go into effect in 18 months, and although the effects have been somewhat overblown by the media, time has become more of the essence in protecting an invention. Although there are many different changes in Patent Office procedures set forth by the Act, small entity inventors will primarily be concerned with the change to the first inventor to file system and “micro entity” filing fees.

U.S. Joins First Inventor to File System

The first major change is to change the United States system to a First Inventor to File system. Most of the world follows the first inventor to file system, and the United States now joins that group. No longer is date of conception and reduction to practice for your invention of much concern in establishing first to file. The “poor man’s patent” (mailing a detailed description of the invention to oneself) serves absolutely no purpose. An inventor should still keep detailed evidence of invention activity because, as will be addressed below, if another entity derived the invention either indirectly or directly from the inventor then that entity may not benefit from the first inventor to file system.

Section 102, Title 35 of the United States Code is amended to state that a person is entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. The effective filing date means the actual filing date. There is an exemption for public disclosures made less than one year before filing by the inventor (or joint inventors), or anyone who derived the invention directly or indirectly from the inventor. These disclosures are not considered prior art.

If Inventor A comes up with a new innovation for a ceiling fan and Inventor B came up with the same innovation independently from Inventor A, under the new Act the first to file for the claimed invention would prevail. Under the current status of the law in certain situations the Patent Office could look back to which inventor actually came up with the innovation first (date of conception and reduction to practice), and not just look to which inventor filed the application first. Under amended Section 102, Inventor B’s public disclosure of the same invention prior to the filing of the patent application by Inventor A would be considered prior art and prevent the issuance of a patent for the invention to Inventor A.

The above scenario presupposes that Inventor B did not obtain the information concerning the invention directly or indirectly from Inventor A. If Inventor B derived the information from Inventor A, then Inventor B will not get the benefits of the first inventor to file status. A new procedure has been established when there is a dispute concerning whether one inventor derived information for a patent application from another inventor (replaces the extremely complicated and expensive Interference proceeding).

These changes to Section 102 will require that inventors move with alacrity when making a filing decision, whether it is for a provisional patent application or non-provisional patent application.

Currently “small entity” inventors are entitled to a 50% discount on Patent Office fees. The Act provides for a new category of “micro entity” inventors. Most independent inventors who have not previously filed for patents will fall into this category. “Micro entity” inventors receive a 75% discount on fees.

Throughout the Central Florida area Attorney Thomas Frost, Registered Patent Attorney, is available to assist you or answer your questions regarding your invention or idea and the best way to protect them through a patent filing. Many patent application evaluations and filings are capable of being handled by telephone or internet for your convenience. You may see the typical fees for our legal services on our website and contact us to speak to Mr. Frost about the patent process.